by Shuying Lin
An anti-suit injunction (ASI) is an order by one court to prevent a party from commencing or continuing the same action in another court. ASIs have long been used in the context of cross-border litigation to preclude the filing of parallel proceedings in another country. ASIs work to allow a party to focus its resources in one single jurisdiction and contain litigation costs. However, obtaining an ASI is not the end of the game, as the other side may petition another court to set aside the ASI with an anti-anti-suit injunction (AASI). As such, a party seeking an ASI may simultaneously apply for an anti-anti-anti-suit injunction (AAASI) to prevent the other party from obtaining the AASI which may nullify the effects of the ASI.
In recent years, the most notable use of such injunctive relief has been in global patent licensing disputes. In this article, we will use a recent case involving two global telecom giants — Ericsson and Samsung — to shed light on how ASIs, AASIs and AAASIs are used in the context of cross-border litigation.
The Ongoing Ericsson v. Samsung Dispute: When Will this Game End?
For the past few years, Ericsson and Samsung have been working together under a 2014 cross-license to reciprocally use their Standard Essential Patents (SEPs) regarding certain cellular networks including the latest 5G technology.
The parties were unable to come to an agreement to renew the cross-license which was about to expire at the end of 2020. As their negotiations broke down, on December 11, 2020, Ericsson sued Samsung in the U.S. District Court of Eastern District of Texas, alleging that Samsung had breached its FRAND (Fair, Reasonable and Non-Discriminatory) commitment in licensing certain SEPs to Ericsson.
In fact, Ericsson was not the first to bring the lawsuit.
Samsung had preceded Ericsson by suing on December 7 in Wuhan Intermediate People’s Court in Hubei Province, China, but Ericsson was unaware of the Chinese legal action at the time it sued in the U.S. district court.
Ten days after the case was filed in China, Ericsson was notified of the Chinese legal action, but it did not know that Samsung had also sought an ex parte ASI and AAASI against it on December 14. The ASI and AAASI would not only bar Ericsson from adjudicating and seeking relief in any forum other than the Wuhan court on the licensing dispute in question (the ASI) but also bars Ericsson from turning to any other forum to set aside the anti-suit injunction (the AAASI).
On Christmas day, Ericsson received notice from the Wuhan Court regarding the ASI and AAASI, the same day the injunctive relief was granted by the court.
Ericsson quickly reacted by doing exactly what was prohibited by the Chinese court order. It successfully persuaded the district court judge of the Eastern District of Texas to obtain an AASI to allow the Texas case to continue.
Samsung subsequently appealed the AASI to the U.S. Court of Appeals for the Federal Circuit (Federal Circuit).
It is unclear how the Federal Circuit would decide the case.
AASIs were sought less frequently than ASIs in the U.S courts, and there are fewer court opinions on this. The AASI will be determined under the case law of the Fifth Circuit, a circuit court that adopts a permissive approach towards ASIs and places less emphasis on the international comity principles than other circuit courts in deciding whether to grant ASIs. Nevertheless, as the district court judge noted in his opinion and order granting the AASI, the Fifth Circuit has not provided any guidance concerning how to treat AASIs similar to the one sought in this case. Further, as the AASI is on appeal in the Federal Circuit, it remains to be seen how the Federal Circuit would apply the Fifth Circuit law.
We would provide an update once the Federal Circuit decision comes down.
Lessons Learnt and Key Take-aways
It is advisable that both sides involved in cross-border litigation familiarize themselves with the use of the above types of injunctive relief, as these remedial measures can be double-edged sword, and either side needs to consider how to use the edge to its advantage and avoid being harmed by the other edge.
In the above case, Samsung sought an ASI to preemptively deny Ericsson’s choice of forum. Samsung also requested an AAASI to prevent Ericsson from petitioning another court to set aside the ASI. Under Chinese laws, both procedural moves can be made without knowledge to the other side.
While the U.S. district court judge granted Ericsson’s AASI, there is no question that Ericsson is disobeying the Chinese court order. Further, it remains to be seen if the AASI will be reversed by the federal appellate court.
To avoid finding oneself in the situation similar to that of Ericsson, if a party anticipates that the other party would strike first with an ASI, we recommend filing an AASI preemptively to prevent the other party from seeking the ASI in the first place.
This case also illustrates the need to stay informed of the latest global developments regarding ASIs, AASIs, and AAASIs. While China is probably late to the game, a few Chinese courts have issued such injunctive relief before Samsung sought its ASI in the Wuhan Court. In the future, it is possible that more ASIs, AASIs and AAASIs will be issued by Chinese courts. As such, one cannot simply rule out the possibility that the opponent may seek such injunctive relief in China. When in doubt, a party should always consult with local counsel to make sure its global litigation strategy is coordinated and works to the best of its interests.
“禁诉令” (anti-suit injunction)是指由法院签发的阻止一方当事人在其他法院提起或继续进行同一诉讼的限制性命令。长期以来， “禁诉令”被广泛运用于跨国诉讼案件中，一方当事人可通过申请“禁诉令”预先阻止另一方当事人在另一国家的法院就同一案件提起平行诉讼，以避免跨司法辖区作战并控制诉讼成本。由于另一方当事人可通过申请“反禁诉令”(anti-anti-suit injunction) 对“禁诉令”进行反制，因此申请“禁诉令”的当事人往往会在申请“禁诉令”的同时申请“反反禁诉令” (anti-anti-anti-suit injunction) 以避免另一方当事人后续在他国法院申请撤回“禁诉令”。
由于该交叉许可协议将于2020年年底到期并且双方未能就新协议达成一致，爱立信于同年12月11日在美国得州东区联邦地区法院提起诉讼，诉称三星在针对相关“标准必要专利”进行授权时未能遵守FRAND (公平、合理和非歧视) 承诺。
在武汉中院立案十天后，爱立信被告知三星已在中国法院提起民事诉讼，但并不清楚三星亦于12月14日在武汉中院单方提出行为保全申请，内容为请求武汉中院裁定在该法院就双方全球专利许可费率作出裁决前，禁止爱立信在任何其他法院就相关“标准必要专利”纠纷请求裁定和寻求救济(即“禁诉令” )，也禁止爱立信向任何其他法院请求撤销由武汉中院签发的“禁诉令” (即“反反禁诉令” )。
之后三星就该“反禁诉令”的裁决向美国联邦巡回上诉法院(United States Court of Appeals for the Federal Circuit，下称Federal Circuit)提出了上诉。
目前尚不清楚联邦巡回上诉法院(Federal Circuit) 将如何针对本案进行裁决。
毕竟，在美国“反禁诉令”不如“禁诉令”常见，法院对相关案件的判决意见也不多。本案中的联邦巡回上诉法院(Federal Circuit)将依据第五巡回法院的判例法进行裁定，相较于其他巡回法院，第五巡回法院属于对“禁诉令”持较宽容态度的联邦上诉法院，并且其判断将更少受到国际礼让的影响。然而，正如针对“反禁诉令”作出裁决的得州法官所指出的那样，不同于“禁诉令”，第五巡回法院的判例法并没有就如何处理类似“反禁诉令”提供指引。此外，由于“反诉禁令”将由联邦巡回上诉法院(Federal Circuit) 裁定，联邦巡回上诉法院将如何适用第五巡回法院的判例法尚有待观察。